Patent Information for Fortress Investment Group LLC

Petitions for Fortress Investment Group LLC

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Uniloc 2017 LLC, a subsidiary of Fortress Investment Group LLC, has continued to file new cases, even as suits brought by Uniloc Corporation Pty. Limited, the prior owner of the asserted patents, work their way through a standing fight arising out of a complicated set of agreements between Uniloc and Fortress. Uniloc 2017 has hit a familiar target, Microsoft, twice in March already (8.19-cv-00428, 8.19-cv-00477). The first of those cases focus on Microsoft’s provision of the LTE-enabled model of its Surface Pro tablet, which the complaint alleges includes a Qualcomm Snapdragon X16 LTE modem that supports HSUPA/HSUPA+ cellular connectivity; the second, its provision of Microsoft PlayReady, with associated servers allegedly deploying license policies based on factors such as geography and time (e.g., establishing allowed dates and expiry periods following a media item’s first playback).

DivX, LLC, a subsidiary of Fortress Investment Group LLC, has filed cases against Hulu (2:19-cv-01606) and Netflix (2:19-cv-01602), apparently the first to litigate patents acquired as part of Fortress’s asset purchase from NeuLion roughly one year ago. The NPE asserts seven of those patents against Hulu, and eight against Netflix, describing the asserted patents as disclosing “technologies that enable many benefits, including receipt and playback of streaming digital video on a wide variety of consumer electronic devices; high-quality video playback, including 4K high-resolution video, without stalls; robust and efficient DRM; and features that improve user experience, including trick play and fast start”. The defendants are accused of infringement through provision of their video streaming services.

In October 2018, a battle over standing erupted in litigation between Apple and Uniloc Corporation Pty. Limited (Uniloc). Apple had moved to dismiss four of Uniloc’s cases against it after learning of a complex set of agreements between the NPE and Fortress Investment Group LLC, arguing that Uniloc’s purported “defaults” under those agreements had deprived Uniloc of standing by shifting sufficient rights in the asserted patents to Fortress. District Judge William Alsup of the Northern District of California denied that motion in January, holding in part that Fortress had shown through its conduct that Uniloc had cured any defaults that had occurred. Apple has now moved for reconsideration of that order, asserting that at least one of Uniloc’s defaults could not have been excused under the evidence presented and that the purported “cure” was really an implied waiver, which would be barred under the relevant agreements—under which any waiver by Fortress must be in writing. Uniloc, meanwhile, has asked the court to roll back certain redactions in Apple’s motion, arguing that only a narrower set of contractual terms between the NPE and Fortress needed to be withheld.

The battle between VLSI Technology LLC and Intel has heated up for a third time. In October 2017, VLSI Technology, an affiliate of Fortress Investment Group LLC, sued Intel in the Northern District of California (5:17-cv-056571) over eight patents, and in June 2018, the NPE opened up a second litigation front, suing Intel in the District of Delaware (1:18-cv-00966) over five more. Now, in the immediate wake of a mid-February order constructing claims in California and an Intel motion to stay the California action in light of multiple instituted trials in inter partes review (IPR) proceedings—and after the Delaware court last year refused to transfer the case before it to California—VLSI Technology has hit Intel a second time in Delaware (1:19-cv-00426), this case asserting six more patents from the NPE’s sizable portfolio of assets originating principally with from either Freescale, NXP, SigmaTel, or VLSI Technology, Inc.

A contentious battle over standing has continued to develop in litigation between Apple and Uniloc Corporation Pty. Limited (Uniloc). Earlier this month, District Judge William Alsup of the Northern District of California rejected Apple’s argument that Uniloc’s purported “defaults” under a complex set of agreements with Fortress Investment Group LLC had deprived Uniloc of standing by shifting sufficient rights in the asserted patents to Fortress. Apple has now sought permission to move for reconsideration, asserting that Judge Alsup erred by adopting an argument not briefed by the parties and by finding that Uniloc had cured any defaults that had existed. Meanwhile, a related dispute over confidentiality has also heated up in the wake of Judge Alsup’s mid-January order that Uniloc could not justify the broad withholding of details about its agreements with Fortress. Uniloc has now filed a motion for reconsideration of that decision, seeking a much more limited set of redactions—in the process, revealing new details about the evolving Uniloc-Fortress relationship.

The US Supreme Court’s decision in TC Heartland caused a dramatic realignment in patent venue through its holding that a corporation “resides” for venue purposes in its state of incorporation. However, while TC Heartland provided some much-needed clarity as to that first prong of the patent venue statute (28 USC Section 1400(b)), courts have split as to the statute’s second prong, which provides that venue is proper where a defendant “has committed acts of infringement and has a regular and established place of business”. One such ruling applying that prong, issued last July by District Judge Rodney Gilstrap, has highlighted the tension in this area of venue law. In that order, issued in a case that Fortress Investment Group LLC affiliate Seven Networks LLC brought against Google, Judge Gilstrap denied the defendant’s venue challenge, holding that certain Google servers maintained within third-party facilities in the Eastern District of Texas constituted a “regular and established place of business”. On February 5, the full Federal Circuit declined to revisit that decision for a second time, following its October denial of Google’s petition for mandamus review—once again prompting a sharp rebuke from dissenting Circuit Judge Jimmie Reyna (2018-0152).

District Judge William Alsup in the Northern District of California has ruled on a motion questioning whether Uniloc Luxembourg S.a.r.l. (f/k/a Uniloc Luxembourg S.A.) and Uniloc USA, Inc., subsidiaries of Uniloc Corporation Pty. Limited, had standing to sue at the time that they filed a raft of lawsuits against Apple in their original forum, the Eastern District of Texas. Judge Alsup ruled that the Uniloc plaintiffs did have standing, rejecting Apple’s argument that a purported “default” under a set of December 2014 agreements between Uniloc and Fortress Investment Group LLC, as subsequently and repeatedly amended, had shifted sufficient rights to Fortress to destroy Uniloc’s standing. Apple had also opposed a motion to add Uniloc 2017 LLC as a plaintiff, arguing that joining new patent owner Uniloc 2017 could not fix a lapse in standing caused by a May 2018 transfer of the Uniloc patent portfolio from Uniloc Luxembourg to Uniloc 2017. Judge Alsup ruled in the plaintiffs’ favor, granting their motion to join Uniloc 2017.

For Uniloc 2017 LLC—the Fortress Investment Group LLC entity that took ownership of Uniloc Corporation Pty. Limited’s patent portfolio last May—2019 has begun much as 2018 ended, with the NPE asserting those patents against various defendants across multiple litigation campaigns. January’s defendants include Bitmovin (1:19-cv-00179), Brightcove (1:19-cv-00180), Dailymotion (1:19-cv-00181), Sling TV (1:19-cv-00278), Telestream (1:19-cv-00182), and Wal-Mart (Vudu) (1:19-cv-00183), all sued as part of what might be called the “video streaming segment” of a campaign that has sprawled over more than two dozen defendants, with more than 15 patents asserted, since just last February. Uniloc 2017 has also filed two new suits against Microsoft (8:19-cv-00158, 8:19-cv-00196), one asserting a homegrown Uniloc patent (generally related to testing whether a remote device is secure) for the first time while the other concerns a patent (generally related to marking speaker changes in a videoconference application) already in suit against Alphabet (Google).

The May 2018 assignment of seemingly the entire patent portfolio of Uniloc Corporation Pty. Limited to Fortress Investment Group LLC triggered a legal throw-down over standing in the cases that Uniloc had filed over some of those patents before their transfer, as well as the dismissal and refiling of the cases that Fortress brought after their transfer. Undeterred, Fortress—through controlled plaintiff and apparent patent owner Uniloc 2017 LLC—also continues to file new suits, over the past two weeks adding HTC and Lenovo (Motorola Mobility) to several campaigns already underway against smartphone and tablet manufacturers Apple, BlackBerry, Huawei, LG Electronics, and/or Samsung, and asserting two media distribution patents already at issue in cases previously filed against Walt Disney (ABC) and Hulu.

In November 2018, Fortress Investment Group, LLC subsidiary Uniloc 2017 LLC was hit by a series of inter partes review (IPR) petitions filed by Apple as the two parties continue to brief a contentious dispute over standing in related district court litigation. November also saw the Patent Trial and Appeal Board (PTAB) institute trial in IPRs involving Japanese patent monetization firm IP Bridge, Inc. and issue final decisions in IPRs against Quarterhill Inc. and Alacritech, Inc., the latter an operating company-turned-NPE formed by SCSI inventor Larry Boucher.

In May 2018, Australian NPE Uniloc Corporation Pty. Limited (Uniloc) assigned more than 600 US patent assets, as well as a number of foreign counterparts—seemingly the bulk of its portfolio—to Fortress Investment Group LLC subsidiary Uniloc 2017 LLC, leading to an avalanche of new litigation. This deal represented the deepening of an existing relationship between the two parties, as a December 2014 security agreement between Uniloc and Fortress indicates that the latter has been funding the former’s litigation for years. That security agreement has now become the focus of a standing dispute in litigation filed by Uniloc prior to its May deal with Fortress. In an October motion to dismiss, defendant Apple has argued that by relinquishing certain licensing rights under the security agreement, and other related agreements, Uniloc’s former patent-holding subsidiary Uniloc Luxembourg S.à r.l. (f/k/a Uniloc Luxembourg S.A.) and its purported successor-in-interest, Uniloc 2017, were deprived of constitutional standing. Uniloc has just fired back, arguing in a November 12 opposition that the rights transferred in the security agreement did not deprive Uniloc Luxembourg of standing under Federal Circuit law. Meanwhile, Fortress has apparently reconsidered the posture of the cases that it has been filing since the May deal with Uniloc, refiling late last week over 40 of those suits with only Uniloc 2017 as the named plaintiff against defendants that include Alphabet (Google), Apple, AT&T, Barnes & Noble, BlackBerry, Cardo Systems, Cisco, Disney (ABC, ESPN), Hulu, Huawei, LG Electronics, Samsung, Terrano, Verizon, and ZTE.

By the end of the first week of October, Fortress Investment Group LLC and Uniloc Corporation Pty. Limited had filed four cases against Alphabet (Google) this year. Since then, the floodgates have remained steadily open, with the NPEs hitting Google ten more times over the subsequent weeks. In May, Uniloc, a prolific plaintiff on its own, transferred over 600 US patent assets to Fortress, including much of a large portfolio that Uniloc had acquired in January 2018 from Pendrell Corporation. While many of the new cases against Google assert one of those former Pendrell assets, homegrown Uniloc patents and patents acquired from separate sources are at issue in others of those ten cases—and Google is not alone. Three recent Fortress-Uniloc cases have brought the total number of cases filed against Apple since the beginning of 2017 north of 20; a new case against Samsung joins more than ten such others over that same time period; and in recent weeks, the NPEs have also tagged Disney (ABC, ESPN), Hulu, and Netflix with one case apiece.

The filing spree of Uniloc Corporation Pty. Limited continues unabated after handing over the reins of its monetization efforts to Fortress Investment Group LLC earlier this year. Last week alone, plaintiffs related to these entities jointly filed a new suit against Apple in the Western District of Texas, one against Cisco, two against Hike, and four against Alphabet (Google), all in the Eastern District of Texas. Since its acquisition of a large portfolio from Pendrell Corporation subsidiary Pendragon Wireless LLC this past January, Uniloc has been filing new lawsuits on nearly a weekly basis over those patents, on its own, before its transfer of over 600 US patent assets to Fortress in May, and together with Fortress since. That shift in patent ownership came as Fortress announced a new, $400M IP fund focused on patent assertion.

The Patent Trial and Appeal Board (PTAB) saw activity in August 2018 involving a variety of frequent litigants. This included petitions for inter partes review (IPR) filed against two NPEs controlled by Fortress Investment Group LLC, INVT SPE LLC and Uniloc 2017 LLC, the latter of which has in recent months cofiled a barrage of lawsuits with subsidiaries of Australian NPE Uniloc Corporation Pty. Limited (Uniloc). The PTAB also instituted trial in August for IPRs against Uniloc 2017 and some of its campaign coplaintiffs, and in an IPR against an NPE controlled by patent attorney Brian Yates, whose US litigation has waned as he pursues a new patent licensing initiative through his company iPEL, Inc. Finally, the PTAB issued final decisions in August for IPRs against Uniloc, Empire IP LLC, and Quarterhill Inc.

Fortress Investment Group LLC and Uniloc Corporation Pty. Limited have added two additional patents to one of their existing litigation campaigns with new suits against AT&T (AT&T Mobility) (2:18-cv-00379) and Verizon (Cellco Partnership d/b/a Verizon Wireless) (2:18-cv-00380). The plaintiffs accuse AT&T of infringing a patent generally related to system control using a “wireless terminal” through the provision of the Smart Home Manager mobile app, as used to change settings for a home Wi-Fi network; Verizon, of infringing a patent broadly related to the delivery of data through “beacon devices” through the use of Bluetooth Low Energy (LE) beacons in its retail stores, as used to send notifications to mobile devices running the Verizon app. The two complaints each assert additional patents already in suit in the campaign, all of them part of a large, January 2018 acquisition from Pendrell Corporation, with ownership moving to Fortress subsidiary Uniloc 2017 LLC this past May.

Last week, RPXreported that a subsidiary of Uniloc Corporation Pty. Limited had transferred more than 600 US assets to Fortress Investment Group LLC in May—the same month that Fortress announced a new, $400M IP fund focused on patent assertion. The transacted portfolio, which includes foreign counterparts in Asia and Europe, comprises former Pendrell Corporation assets (including patents originating with the Electronics and Telecommunications Research Institute (ETRI), Philips, and IBM); homegrown Uniloc patents (naming CEO Craig Etchegoyen as inventor); and patents acquired from Ayalogic, Fullpower Technologies, HP Enterprise, and Paragon Solutions.Subsets of those patents have appeared in a recent barrage of new litigation against Amazon, BlackBerry, Huawei, Microsoft, Samsung, and ZTE (with some defendants hit with four or more lawsuits each), filed by subsidiaries of Fortress and Uniloc. Fortress’s new ownership of the majority of Uniloc’s former US patent portfolio, together with its role as coplaintiff in Uniloc’s latest suits, indicates that Fortress—not Uniloc—is likely now in control.

Uniloc Corporation Pty. Limited, through controlled subsidiaries and at least in some instances with the apparent backing of Fortress Investment Group LLC, has continued to roll out new cases in 2018, hitting Amazon (with four additional cases), BlackBerry (four new cases), Huawei (one case), Microsoft (one case), Samsung (one case), and ZTE (four cases) just last week. One of the new suits against Amazon returns to Uniloc’s earlier litigation strategy, asserting a patent naming Uniloc cofounder Craig Etchegoyen as inventor, but the other new suits continue the assertion of former Philips patents received this past January from publicly traded NPE Pendrell Corporation. Pendrell sold hundreds of patent assets from its “Pendragon” portfolio (held by subsidiary Pendragon Wireless LLC) to Uniloc in January—the patents deriving from multiple original sources, including the Electronics and Telecommunications Research Institute (ETRI) and IBM as well as Philips. Nearly all of the new complaints have been filed in Texas, confirming Uniloc’s commitment to litigate in that state, if not solely in the Eastern District, after the US Supreme Court’s TC Heartland decision in May 2017.

VLSI Technology LLC, an apparent affiliate of Fortress Investment Group LLC, has filed another case against Intel (1:18-cv-00966), this one in Delaware, asserting five more patents, of multiple subject matters and originating from either Freescale, NXP, SigmaTel, or VLSI Technology, Inc. The new suit follows an October 2017 complaint in the Northern District of California asserting eight patents against a large number of Intel microprocessors, including Core i3, i5, and i7; Xeon E3, E5, and E7; and Atom microprocessors, as well as Stratix 10 Field Programmable Gate Arrays (FPGAs) and other products that incorporate Embedded Multi-Die Interconnect Bridge (“EMIB”) technology. Now also accused of infringement are Intel products (1) containing Intel On-Chip System Fabric technology, (2) with a Power Control Unit (PCU) to compensate for Inverse Temperature Dependence “in an infringing manner”, (3) with metal dummy lines to reinforce regions under bond pads “in an infringing manner”, (4) that include an “infringing Management Engine” and a CPU that includes a memory controller, and (5) that supply an output supply voltage to a power gated circuit “in an infringing manner”.

Following InterDigital, Inc.’s announcement last month of its acquisition of Technicolor’s patent licensing business—a deal the company says will “extend its licensing program to new activities in the consumer electronics field”—assignments received from LG Electronics, and most recently, Huawei, were recorded with the USPTO. April has also seen another transfer from NXP Semiconductor to an affiliate of Fortress Investment Group LLC; transfers of more than 100 US patent assets from NXP to Fortress have been recorded to date.

VLSI Technology LLC has filed suit against Intel (3:17-cv-05671), asserting eight patents received either directly from NXP or from Freescale, which NXP acquired in December 2015. The plaintiff, an apparent affiliate of Fortress Investment Group LLC, has targeted a large number of microprocessors, including Intel Core i3, i5, and i7; Xeon E3, E5, and E7; and Atom microprocessors, as well as Stratix 10 Field Programmable Gate Arrays (FPGAs) and other products that incorporate Embedded Multi-Die Interconnect Bridge (“EMIB”) technology.

ZTE is now the third company to have been sued over telecommunications patents acquired by Fortress Credit Group LLC from Inventergy Global, Inc. Unable to make scheduled payments on $10M of debt, Inventergy entered into a restructuring agreement with Fortress in December 2016, after which it assigned 740 telecommunications patents to INVT SPE LLC, an entity managed by Fortress affiliate DBD Credit Funding LLC. INVT SPE, which sued ZTE on August 29, also has active cases against Apple and HTC; all three lawsuits assert the same seven patents, which were acquired from Inventergy in April and which originated with Panasonic.

Marathon Patent Group, Inc. entered into a termination and release agreement on August 3 with Erich Spangenberg, whom it had hired in 2016 as its Director of Acquisitions, Licensing, and Strategy. Spangenberg’s departure came as Marathon was approaching an August 15 deadline, under which it was to repay Fortress Investment Group LLC $15.99M according to a debt restructuring plan signed in May. With Q1 revenue of just $78K, and with roughly $500K cash on hand going into Q2, it is not surprising that Marathon has now begun relinquishing patents to Fortress.

RPX took notice, among the USPTO assignment records made available during the first half of July, of a patent transfer involving over 160 assets to Fortress Investment Group LLC. Other assignees of note included IP Edge LLC, the most prolific patent plaintiff in 2017 thus far, and Rondevoo Technologies, Inc., which appears to be on the precipice of launching its first litigation campaign.

Recent European litigation activity has included several developments in German cases brought by subsidiaries of American NPEs, with a stay entered in two lawsuits brought by ParkerVision, Inc. and the affirmance of an injunction for Xperi Corporation. Meanwhile, plaintiffs originating in Europe have varied widely in size, financial resources, and level of activity, with one of Europe’s most persistent litigants (IPCom GmbH & Co KG) backed by financing from the US-based Fortress Investment Group LLC.

Since the US Supreme Court issued its decision in TC Heartland v. Kraft Foods Group Brands, RPX has seen an upswing in venue-related filings by both plaintiffs and defendants—with indications that some NPEs may be throwing in the towel on Texas, while others are seemingly digging in. Defendants have also begun to adapt their defensive strategies, asserting more comprehensive interpretations of the patent venue statute and proactively maintaining their right to bring venue challenges down the road.

The same day that it voluntarily dismissed its case filed in May against ZTE in the Eastern District of Texas (2:17-cv-00440), Seven Networks LLC (an apparent affiliate of Fortress Investment Group LLC) refiled the suit, this time in the Northern District of Texas (3:17-cv-01495). Seven’s June 6 complaint accuses ZTE of infringing the same seven mobile communications patents (8,811,952; 9,247,019; 9,325,600; 9,351,254; 9,516,127; 9,516,129; 9,553,816) that were asserted in the earlier, Eastern District suit, again through the manufacture and sale of Android devices. Seven’s refiling follows the Supreme Court’s recent TC Heartland decision, in the wake of which another Fortress affiliate, INVT SPE LLC, last month moved cases against Apple and HTC from Delaware to New Jersey.

Last Monday, the US Supreme Court’s TC Heartlanddecision returned a key portion of the patent venue statue, one that allows infringement suits to be brought where a defendant corporation “resides”, to its prior interpretation: such a defendant “resides” only in its state of incorporation. Three days later, two February cases filed in Delaware by Inventergy, Inc. and controlled by Fortress Investment Group LLC, one each against Apple and HTC, were voluntarily dismissed without prejudice. Fortress refiled those two suits, accusing Apple (2:17-cv-03738) and HTC (2:17-cv-03740) of infringing the same seven mobile telecommunications patents (6,466,563; 6,611,676; 6,760,590; 7,206,587; 7,760,815; 7,764,711; 7,848,439), but this time in New Jersey. Fortress did so through an entity (INVT SPE LLC) that it had created in March and with much more specific allegations supporting its contention that venue is proper in New Jersey.

Per a recently signed debt restructuring plan, publicly traded NPE Marathon Patent Group, Inc. has three months to pay Fortress Investment Group LLC over $15M. With just around $500K cash on hand, Marathon—which on May 15 reported Q1 2017 revenue of just $78K—may be hard pressed to find the funds needed to meet that deadline.

Following a restructuring agreement signed in the fourth quarter of last year, publicly traded NPE Inventergy Global, Inc. says it has given Fortress Investment Group LLC sole discretion over the monetization of nearly 750 telecommunications patents. The announcement follows Inventergy’s launch in February of a new campaign targeting mobile telecommunications patents—its first litigation in just over a year.

A couple of months after amending its October 2014 agreement with Fortress Investment Group LLC, Inventergy, Inc. has kicked off its first litigation campaign to assert patents that it received from Panasonic in December 2013. Two new cases, one each against Apple (1:17-cv-00196) and HTC (1:17-cv-00200), allege infringement of seven patents (6,466,563; 6,611,676; 6,760,590; 7,206,587; 7,760,815; 7,764,711; 7,848,439) through the manufacture and sale of mobile phones and tablets that use the mandatory portions of various mobile communications standards. Inventergy’s publicly traded parent (Inventergy Global, Inc.) has indicated in SEC filings that, under the “Restructuring Agreement”, Fortress has “the sole discretion to make any and all decisions relating to [Inventergy’s] patents and patent monetization activities” with certain exclusions.

Andrea Electronics Corporation (AEC) has rebooted its sole litigation campaign, filing a district court case against Apple (2:16-cv-5220), another against Samsung (2:16-cv-5217), and a complaint before the International Trade Commission (ITC) against both (337-TA-1026). All three new complaints assert identified claims from three patents (6,049,607; 6,363,345; 6,377,637) generally related to interference cancelling and noise reduction. At issue in this campaign are audio processing hardware and software in a host of computing and related products, including laptops, tablets, smartphones, headsets, and wearables.